Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 79115624 SALUS (Stylized and/or with Design, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=79115624) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

 In Re Application of:   SALUS Haus Dr. med. Otto Greither; Nachf. GmbH & Co. KG

Mark:                           salus

Serial No.:                   79/115,624

Filed:                           July 6, 2012

Trademark Attorney:  Natalie Polzer

Law Office:                 108

Docket No.:                 52317-3430

RESPONSE TO OFFICE ACTION

I.              Claim of Ownership

Applicant is the owner of U.S. Registrations Nos. 1568679 and 1740638.

AII.            Amendment

            Please amend the identification of goods in the above-referenced application as follows:

            (1) Please delete the goods in International Class 003 from the application.

            (2)  Please amend the identification of goods in International Class 5 to read:

Medicines for the treatment of aiding sleep and promoting digestion, sanitary preparations for medical use, dietetic products adapted for medical use, namely, dietetic supplement beverages for aiding sleep and promoting digestion and dietetic foods, namely, dietary food supplements containing vitamins, herbal extracts and/or floral extracts, minerals, iron, yeast, fruits and tonics; medicinal teas, namely, medicinal herbal teas; dietetic products, namely, plant and fruit juices and vegetable juices adapted for medical use; medicinal confectionery, namely, herbal sweets, vitamin tablets, compressed vitamin and mineral tablets for chewing and mineral compressed tablets; medicinal concentrates for baths, medicinal non-alcoholic and alcoholic beverages made with plant extracts and herbs, medicinal liniments, namely aromatic pine alcohol; medicated bath preparations; therapeutic medicated preparations for the bath, said goods excluding products for treating skin disorders or for use in dermatology

 

            (3)  Please amend the identification of goods in International Class 30 to read:

 Teas, namely, aromatic and herbal teas

            (4)  Please amend the identification of goods in International Class 32 to read:

Fruit juices, vegetable juices as beverages, dietetic beverages, namely, fruit juice and vegetable juice not for medical purposes

III.           Remarks

In the November 6 office action, the Examining Attorney refused registration of Applicant’s mark on the grounds that the mark was likely to be confused with the marks in the following registrations.

U.S. Trademark Registration No. 3,159,326 for “SALUS” covering Drinking water, namely table water, mineral waters, non carbonated water and sparkling water, none of which contain herbs or herbal ingredients, sold in supermarkets, convenience stores, grocery stores, in restaurants, but not in health food stores in IC 0032 and owned by Compañia Salus S.A. (“’326 Registration”);

U.S. Trademark Registration No. 3,362,991 for “SALUS” covering retail store services, mail order retail services, online retail store services and shop-at-home parties all in the field of personal care products, cosmetics, home fragrance products and accessories in IC 035 and owned by Mad Maverick, LLC (“’991 Registration”);

 

U.S. Registration No. 3,370,114 for “SALUS” covering Personal care products, namely, aftershave, antiperspirant, artificial nails, astringent for the face for cosmetic purposes, astringent for the skin for cosmetic purposes, bath beads, bath oil, non-medicated bath salts, blush, body glitter, body oil, body scrub, bubble bath, cologne, cream for the body, cream for the cuticles, cream for the eyes, cream for the face, cream for the hands, deodorant, essential oils, exfoliators for the skin, eye gels, eye makeup pencils, eye shadow, face highlighter, facial masks, face mist, face scrub, non-medicated foot soak, foundation, fragrant body splash, fragrant body mist, hair conditioner, hair dyes, hair glitter, hair highlighter, hair mascara, hair pomade, hair rinses, hair removing creams, hair shampoo, hair spray, hair straightener, hair styling gel, hair styling mousse, lotion for the body, lotion for the hands, lotion for the face, lip balm, lip gloss, lip liner, lip makeup pencils, lip stick, makeup for the body, makeup for the face, makeup remover, mascara, nail corrector pens, nail polish, nail polish remover, nail stencils, non-medicated blemish stick, non-medicated cleanser for the face, non-medicated foot spray, non-medicated mood enhancing massage ointment, non-medicated mood enhancing skin cream, oil blotting sheets for the skin, perfume, powder for the body, powder for the face, powder for the feet, pumice stones for personal use, salt scrubs for the skin, shaving cream, shower gel, skin bronzing cream, soap for the body, soap for the face, soap for the hands, sun block for the body, sun block for the face, suntan lotion for the body, suntan lotion for the face, sunless tanning lotion for the body, sunless tanning lotion for the face, pre-suntanning lotion for the body, pre-suntanning lotion for face, post-suntanning lotion for the body, post-suntanning lotion for the face and talcum powder and home fragrance products, namely, potpourri, room fragrancing gels, scented room fragrances, scented room fragrance sprays and refills for electric room fragrance dispensers in IC 003 and owned by Mad Maverick, LLC (“’114 Registration”);

 

U.S. Registration No. 3,677,674 for “NEOSALUS” covering Dermatological pharmaceutical products; pharmaceutical preparations for treating skin disorders; pharmaceutical preparations for use in dermatology; pharmaceutical skin lotions in IC 005 and owned by Quinnova Pharmaceuticals, Inc. (“’674 Registration”); and

 

U.S. Registration No. 3,677,679 for “NEOSALUS” covering Dermatological pharmaceutical products; pharmaceutical preparations for treating skin disorders; pharmaceutical preparations for use in dermatology; pharmaceutical skin lotions in IC 005 and owned by Quinnova Pharmaceuticals, Inc. (“’679 Registration”)

 

A.  Applicant’s Mark Is Not Likely To Cause Confusion in Law or in Fact

      With The Mark in the ‘326 Registration

 Although the Examining Attorney did not specify, Applicant assumes the Examining Attorney believes that Applicant’s mark is likely to be confused with the mark in the ‘326 Registration because the goods covered by that registration (“table water, mineral waters, non carbonated water and sparkling water”) are somewhat similar or related to Applicant’s goods in class 30 (“[t]eas, particularly aromatic teas, confectionery”) and Class 32 (“[f]ruit juices, vegetable juices as beverages, these products also as dietetic beverages not for medical purposes”).  The Examining Attorney’s refusal, however, fails to take into consideration the fact that Applicant already owns two U.S. registrations for SALUS marks covering teas and dietetic beverages. 

As noted above, Applicant is the owner of U.S. Registration No. 1568679 for SALUS APPLETIME HERBAL TEA covering “[h]erbal teas for food purposes” and U.S. Registration No. 1740638 for SALUS covering “dietary supplements and dietetic foods and beverages; namely, tonics, plant and herb extracts in liquid form; tea” (collectively, “Applicant’s prior SALUS registrations”).  Applicant’s prior SALUS registrations, both of which predate the ‘326 registration, are for marks identical or nearly identical to the mark at issue and cover goods identical or substantially identical to the goods covered by the current application.  As such, Applicant’s mark in the current application cannot cause a likelihood of confusion with the mark in Registration ‘326.  See, e.g., Morehouse Mfg. Corp. v. J. Strickland Co., 407 F.2d 881, 160 USPQ 715 (CCPA 1971). 

This is especially true here, where Applicant’s prior SALUS registrations predate the ‘326 registration.  In particular, Applicant notes that the SALUS mark covered by the ‘326 Registration was permitted to register in the face of the Applicant’s Registration No. 1740638 for the identical mark, SALUS, covering dietetic beverages and teas, the very goods at issue in the current application.  The co-existence of Applicant’s 1740638 registration and the ‘326 Registration is prima facie evidence that the marks contained therein are not confusingly similar.  Since the marks are identical, the only basis for finding confusion unlikely was the difference in the goods – “table water, mineral waters, non carbonated water and sparkling water” (‘326 Registration) vs. “dietary supplements and dietetic foods and beverages; namely, tonics, plant and herb extracts in liquid form; tea” (Registration No. 1740638). 

Applicant’s current application covers teas, fruit juice dietetic beverages, and vegetable juice dietetic beverages, which are identical or nearly identical to the teas, tonic dietetic beverages and plant extract dietetic beverages in Applicant’s prior registrations.  If the mark in the ‘326 Registration did not create a likelihood of confusion with the mark in Applicant’s Registration No. 1740638, then it is not likely to be confused with the mark in the current application, which like Applicant’s Registration No. 1740638, covers teas and dietetic beverages.  See In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012) (no confusing similarity between Applicant’s ANYWEAR mark covering footwear and cited ANYWEAR mark covering clothing in view of Applicant’s pre-existing registration for ANYWEARS covering footwear).  Moreover, to allow the ‘326 registration for SALUS covering waters in the face of Applicant’s pre-existing registration for SALUS covering teas and dietetic beverages and then to block registration of Applicant’s subsequent application for SALUS covering teas and dietetic beverages in view of the ‘326 registration would render Applicant’s prior SALUS registrations meaningless, unfairly inflate the scope of the ‘326 registration, and grossly pervert the federal system of trademark registration based upon priority of rights. 

B.  With the Deletion of the Class 3 Goods from the Application, Applicant’s

      Mark Is Not Likely To Be Confused With the Marks in the ‘991 and ‘114

      Registrations

Although the Examining Attorney did not specify, Applicant assumes the Examining Attorney refused registration of Applicant’s mark in light of the ‘991 and ‘114 Registrations because of a belief that the Class 3 goods in the application, namely, “[c]osmetics, essential oils, cosmetic preparations for baths; sauna infusions” render the mark confusingly similar to the mark in the ‘991 and ‘114 Registrations.  Applicant has responded to that refusal by amending the identification of goods to delete the Class 3 goods from its application.  Applicant respectfully submits that, with the amendment, its mark is not likely to be confused with the mark in the ‘991 and ‘114 Registrations and that those registrations pose no obstacle to the registration of Applicant’s mark.    

C.  With the Amendment of the Class 5 Goods in the Application,  

      Applicant’s Mark Is Not Likely To Be Confused With the Marks in the

      ‘674 and ‘679 Registrations

 The Examining Attorney refused registration of Applicant’s mark in view of the marks in the ‘674 and ‘679 Registrations because Applicant’s inclusion of medicines and dietetic products for medical use in the identification was so broad that it could encompass the “pharmaceutical preparations for treating skin disorders or for use in dermatology” products in the ‘674 and ‘679 Registrations.  Applicant has responded to the refusal by amending the Class 5 identification of goods to exclude expressly “products for treating skin disorders or for use in dermatology.”  Applicant respectfully submits that, with the amendment, its mark is not likely to be confused with the marks in the ‘674 and ‘679 Registrations, and that those registrations pose no obstacle to the registration of Applicant’s mark. 

D.  Applicant’s Mark Is Not Likely To Be Confused With the Mark

      Application No. 77889377

In the November 6, 2102 Office Action, the Examining Attorney also noted that Applicant’s mark may be confusingly similar to the mark in Application No. 77889377.  That position is respectfully traversed. 

Application No. 77889377 is for the mark VIASALUS covering “dietary supplements and natural skin therapy products formulated to promote healthy skin clear of conditions such as acne, roseacea and shingles.”  Although the Examining Attorney did not specify, Applicant assumes the Examining Attorney believes Applicant’s mark is confusingly similar because the goods covered by the cited prior application are similar to the Class 5 medicines and dietary supplements in Applicant’s application. 

In response, Applicant notes that its pre-existing Registration No. 1740638 for SALUS covers dietary supplements, which are identical or virtually identical to the dietary supplements in the current application.  Registration of the mark in Application No. 77889377 in coexistence with the mark in Applicant’s Registration No. 1740638 will be prima facie evidence that the mark in Application No. 77889377 is not likely to be confused with the mark SALUS covering dietary supplements.  In light of Applicant’s pre-existing registration for SALUS covering dietary supplements, the mark in Applicant’s current application is not likely to be confused with the mark in Application No. 77889377.  See In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012) (no confusing similarity between Applicant’s ANYWEAR mark covering footwear and cited ANYWEAR mark covering clothing in view of Applicant’s pre-existing registration for ANYWEARS covering footwear).  In addition, Applicant has amended the Class 5 identification of goods to exclude expressly “products for treating skin disorders or for use in dermatology.”  With that amendment, Applicant has expressly excluded from its application the very goods covered by Application 77889377.  For the foregoing reasons, Application respectfully submits that its mark is not likely to be confused with the mark in Application No. 77889377. 

In the November 6 Office Action, the Examining Attorney also required Applicant to amend its identification of goods.  Application has amended its identification of goods to conform to the Examining Attorney’s requirements. 

Finally, the Examining Attorney required Application to claim ownership of Registrations U.S. Registrations Nos. 1568679 and 1740638.  Applicant has complied with that requirement. 

IV.          Conclusion

With the submission of this Amendment and Response, Applicant believes that all outstanding requirements in connection with this application are now satisfied.  Further and favorable action resulting in publication of the mark is respectfully requested.   Although no fees are believed to be required, should any fee be required, please charge the required amount to deposit account no. 20-0778. 

Should the Examining Attorney have any further questions or comments, please contact the undersigned at the below-listed telephone number.

This 6^th day of May, 2013,                  Respectfully submitted,

                                                                             /Charles S. Murray, Jr./______________

                                                                        Charles S. Murray, Jr.                                               

                                                                        THOMAS, HORSTEMEYER, LLP

                                                                        400 Interstate North Parkway

                                                                        Suite 1500

                                                                        Atlanta, Georgia 30339

                                                                        (770) 933-9500

                                                                        (770) 951-0933 (facsimile)

 

                                                                        Attorneys for Applicant

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 003 for Cosmetics, essential oils, cosmetic preparations for baths; sauna infusions

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 005 for Medicines, sanitary preparations, dietetic products adapted for medical use; medicinal teas, particularly medicinal herbal teas; plant and fruit juices and vegetable juices as dietetic products for medical use; medicinal confectionery, particularly herbal sweets, vitamin tablets, compressed tablets for chewing and mineral compressed tablets; medicinal concentrates for baths, medicinal elixirs made with herbs and plants; medicinal non-alcoholic and alcoholic beverages made with plant extracts and herbs, medicated soil; medicinal liniments, particularly aromatic pine alcohol; medicated bath preparations; therapeutic preparations for the bath
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Medicines, sanitary preparations, dietetic products adapted for medical use; Medicines for the treatment of aiding sleep and promoting digestion, sanitary preparations for medical use, dietetic products adapted for medical use, namely, dietetic supplement beverages for aiding sleep and promoting digestion and dietetic foods, namely, dietary food supplements containing vitamins, herbal extracts and/or floral extracts, minerals, iron, yeast, fruits and tonics; medicinal teas, particularly medicinal herbal teas; medicinal teas, namely, medicinal herbal teas; plant and fruit juices and vegetable juices as dietetic products for medical use; dietetic products, namely, plant and fruit juices and vegetable juices adapted for medical use; medicinal confectionery, particularly herbal sweets, vitamin tablets, compressed tablets for chewing and mineral compressed tablets; medicinal confectionery, namely, herbal sweets, vitamin tablets, compressed vitamin and mineral tablets for chewing and mineral compressed tablets; medicinal concentrates for baths, medicinal elixirs made with herbs and plants; medicinal concentrates for baths, medicinal non-alcoholic and alcoholic beverages made with plant extracts and herbs, medicinal liniments, namely aromatic pine alcohol; medicinal non-alcoholic and alcoholic beverages made with plant extracts and herbs, medicated soil; medicated bath preparations; medicinal liniments, particularly aromatic pine alcohol; therapeutic medicated preparations for the bath, said goods excluding products for treating skin disorders or for use in dermatology; therapeutic preparations for the bathClass 005 for Medicines for the treatment of aiding sleep and promoting digestion, sanitary preparations for medical use, dietetic products adapted for medical use, namely, dietetic supplement beverages for aiding sleep and promoting digestion and dietetic foods, namely, dietary food supplements containing vitamins, herbal extracts and/or floral extracts, minerals, iron, yeast, fruits and tonics; medicinal teas, namely, medicinal herbal teas; dietetic products, namely, plant and fruit juices and vegetable juices adapted for medical use; medicinal confectionery, namely, herbal sweets, vitamin tablets, compressed vitamin and mineral tablets for chewing and mineral compressed tablets; medicinal concentrates for baths, medicinal non-alcoholic and alcoholic beverages made with plant extracts and herbs, medicinal liniments, namely aromatic pine alcohol; medicated bath preparations; therapeutic medicated preparations for the bath, said goods excluding products for treating skin disorders or for use in dermatology

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 030 for Teas, particularly aromatic teas, confectionery
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Teas, particularly aromatic teas, confectionery; Teas, namely aromatic and herbal teasClass 030 for Teas, namely aromatic and herbal teas

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 032 for Fruit juices, vegetable juices as beverages, these products also as dietetic beverages not for medical purposes
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Fruit juices, vegetable juices as beverages, these products also as dietetic beverages not for medical purposes; Fruit juices, vegetable juices as beverages, dietetic beverages, namely, fruit juice and vegetable juice not for medical purposesClass 032 for Fruit juices, vegetable juices as beverages, dietetic beverages, namely, fruit juice and vegetable juice not for medical purposes

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

ATTORNEY ADDRESS
Applicant proposes to amend the following:
Proposed:
Charles S. Murray, Jr. of Thomas Horstemeyer, LLP, having an address of
Suite 1500 400 Interstate North Parkway Atlanta, Georgia 30339
United States
trademarks@thomashorstemeyer.com
770-933-9500
770-951-0933
The attorney docket/reference number is 52317-3430 .


CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
WEICKMANN & WEICKMANN
81635 MÜNCHEN
P.O. BOX 860 820
DE

Proposed:
Charles S. Murray, Jr. of Thomas Horstemeyer, LLP, having an address of
Suite 1500 400 Interstate North Parkway Atlanta, Georgia 30339
United States
trademarks@thomashorstemeyer.com
770-933-9500
770-951-0933
The docket/reference number is 52317-3430 .



ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of U.S. Registration Number(s) 1568679 and 1740638.


SIGNATURE(S)
Response Signature
Signature: /Charles S. Murray, Jr./     Date: 05/06/2013
Signatory's Name: Charles S. Murray, Jr.
Signatory's Position: Attorney for Applicant, Washington, D.C. Bar Member

Signatory's Phone Number: 770-933-9500

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    Charles S. Murray, Jr.
   Thomas Horstemeyer, LLP
   Suite 1500
   400 Interstate North Parkway
   Atlanta, Georgia 30339
        
Serial Number: 79115624
Internet Transmission Date: Mon May 06 16:26:30 EDT 2013
TEAS Stamp: USPTO/ROA-XX.XX.XX.X-2013050616263013310
6-79115624-5008b169352c875a68bb42811b896
ebcd03154e2928cd259be692f7c17103bd7-N/A-
N/A-20130506160214380630